Ex Parte Kamins et al

Board of Patent Appeals and Interferences

Aug 3, 2007

10029583 (B.P.A.I. Aug. 3, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THEODORE I. KAMINS, YONG CHEN,
and PATRICIA A. BECK
____________

Appeal 2007-2983
Application 10/029,583
Technology Center 1700
____________

Decided: August 3, 2007
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 1-5,
and 7-48, the only claims that remain pending in this application. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2007-2983
Application 10/029,583

Appellants’ invention is directed to a method for forming at least one
nanopore useful for forming a mold for deposition of a material or for
aligning molecule(s) in fabricating electronic devices. Claim 1 is illustrative
and reproduced below:
1. A method for forming at least one nanopore for aligning at least one
molecule for molecular electronic devices or for forming a mold for
deposition of a material, comprising:

(a) providing a substrate having a first major surface and a second
major surface, substantially parallel to said first major surface;

(b) forming an etch mask on said first major surface, said etch mask
comprising at least one nanoparticle;

(c) directionally etching said substrate from said first major surface
toward said second major surface, using said etch mask to protect underlying
portions of said substrate against said etching, thereby forming at least one
pillar underneath said etch mask, wherein said directional etching is carried
out using reactive ion etching;

(d) forming a layer of insulating material on said etched substrate,
including around said at least one pillar and at least partially covering said at
least one pillar; and

(e) removing said at least one pillar to leave at least one said nanopore
in said insulating layer.

The Examiner relies on the following prior art references to show
unpatentability:
Deckman US 4,407,695 Oct. 4, 1983
Jun US 5,393,373 Feb. 28, 1995
Brandes US 5,900,301 May 4, 1999

2
Appeal 2007-2983
Application 10/029,583

Hatakeyama US 6,010,831 Jan. 4, 2000
Kikuchi US 6,379,572 B1 Apr. 30, 2002

Claims 1, 2, 5, 7, 8, 10-13, 23, and 47 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kikuchi in view of Deckman. Claims 3,
21 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kikuchi in view of Deckman and Hatakeyama. Claims 9, 14-20, 24-26,
28-46, and 48 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kikuchi in view of Deckman, Hatakeyama, and Jun. Claims 4 and 27
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kikuchi
in view of Deckman, Hatakeyama, Jun, and Brandes.
We refer to the Brief and Reply Brief, and the Answer for a complete
exposition of the opposing viewpoints of Appellants and the Examiner with
respect to the rejections maintained by the Examiner.1 We have considered
the rejected claims separately to the extent that the claims are separately
argued in the Brief in a manner consistent with 37 C.F.R. § 41.37 (c)(1)
(vii). Of course, “[a] statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim”
(id.). We affirm the stated rejections.
Rejection over Kikuchi and Deckman
Appellants argue claims 1, 2, 5, 7, 8, 10-13, and 23 together as a
group (Br. 6-8). Thus, we select claim 1 as the representative claim on
which we decide this appeal for this claim grouping.

1 Our references to the Brief and Reply Brief herein are to the Brief filed on
September 27, 2005 and the Reply Brief filed on March 20, 2007.
3
Appeal 2007-2983
Application 10/029,583

The Examiner has found that Kikuchi discloses a process
corresponding to the process of representative claim 1 except for describing
that the spherical particles serving as an etch mask have a nanoparticle size
and that the etching step of the layer/substrate beneath the etch mask
involves directional etching using reactive ion etching. According to the
Examiner, Deckman discloses nanoparticle size masks and directional
etching, including the use of a reactive ion etching technique; that is,
chemical etching using reactive atoms or radicals (Answer 5 and 6).
The Examiner has essentially determined that it would have been
obvious for one of ordinary skill in the art to employ such nanoparticles as
the etch mask in Kikuchi and to use reactive ion etching during the etching
of Kikuchi for forming a pillar underneath each particle etch mask as taught
by Deckman to be known techniques for masking using particle masks and
for etching using reactive ions to obtain the expected results associated
therewith (id).
Appellants contend that there is no suggestion for combining the
references and that, even if combined, the combined teachings of the applied
references do not teach or suggest a method for the formation of one or more
nanopores for aligning at least one molecule therein. Moreover, Appellants
contend that Deckman does not disclose the reactive ion etching, one of the
claim features on which Deckman is relied on for by the Examiner.
Thus, the principal issues in this appeal concerning the propriety of
the Examiner’s rejection of representative claim 1 are: Have Appellants
identified reversible error in the Examiner’s obviousness rejection of
representative claim 1 by the assertion of (1) a lack of combinability of
Kikuchi and Deckman, or, even if combinable, (2) by alleging the failure of
4
Appeal 2007-2983
Application 10/029,583

the references to teach the claimed nanopore(s) and/or to suggest reactive
ion etching as an obvious etching option?
We answer these questions in the negative and affirm the Examiner’s
rejection of representative claim 1 and claims 2, 5, 7, 8, 10-13, and 23
grouped together therewith.
At the outset, we note that representative claim 1 is not drawn to a
molecular electronic device. Likewise, representative claim 1 is not limited
to a method for making a molecular electronic device. Rather, appealed
claim 1 is directed to a method for forming a nanopore using directional
etching with an etch mask made of at least one nanoparticle. Appellants
describe commercial particles available in sizes of from about 2 nm to 250
nm as being suitable for use as an etch mask in a best mode of their process
(Specification 4). Thus, the claimed method of forming nanopores would
have been understood by one of ordinary skill in the art as being inclusive of
forming pores up to at least about 250 nm in cross-section.
The Examiner has correctly found that Kikuchi discloses a method for
forming micropores in an insulating layer (20/64) using microspheres as
masks for etching (Answer 3-5; Kikuchi; Fig. 1, Fig. 6A- Fig. 10B and col.
4, l. 57 – col. 5, l. 55). The Kikuchi method corresponds to the claim 1
method with the exception of explicitly requiring nanoparticle size
microspheres as masks such that the micropores formed are of a nanoscale
size and with the further exception of specifying directional etching using
reactive ions. However, Kikuchi teaches that small feature sizes are
desirable (col. 2, l. 1-6); hence, it would have been obvious to one of
ordinary skill in the art at the time of the invention to use smaller size mask
particles to form smaller pores for the ultimate obtainment of the smaller
5
Appeal 2007-2983
Application 10/029,583

feature sizes (for example, gate emitter openings) desired by Kikiuchi. In
this regard, the Examiner refers to Deckman for a teaching that smaller size
mask particles of a nanoparticle size are known to be available for use as
masks for etching (see, e.g., Deckman; col. 6, ll. 25-43). Moreover, the
Examiner relies on Deckman for showing that etching with reactive ions is a
well-known etching method, which would have been obvious to use in
Kikuchi to obtain the expected benefits of using such a known etching
technique (Deckman, col. 1, ll. 46-52). We note that the test for combining
references is not what the individual references suggest, as if applied alone.
Rather, the test is what the combined teachings of those references would
have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). See also, In re Sneed, 710 F.2d
1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review.”).
In the face of the combined teachings of the applied references as set
forth above and in the Answer, Appellants’ contentions concerning a lack of
suggestion for the claimed combination is not persuasive as Kikuchi
furnishes more than adequate reasons for one of ordinary skill in the art to
seek out smaller mask particles, as shown to be available in the prior art, for
forming smaller pores and resultant feature sizes. Moreover, Appellants’
arguments to the effect that the applied references would not teach one of
ordinary skill in the art to use reactive ion etching and to form nanoscale
pore sizes are not persuasive for reasons advanced above and in the Answer.
In this regard, Deckman clearly discloses etching with reactive radicals
(ions) to be an available chemical etching technique when using small
6
Appeal 2007-2983
Application 10/029,583

particle masks and further discloses that the particles may be of a nanoscale
size. Furthermore, Kikuchi shows how the use of small particle masks and
etching can be combined to form small pore sizes in a layer. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” See KSR Int’l
Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007).

Claim 47
Regarding separately argued dependent claim 47, Appellants
additionally argue that claim 47 requires that the method for forming the
nanopore includes the further provision of furnishing a molecule therein (Br.
14). Regarding this argued claim limitation, we note that Kikuchi teaches
that the pore formation process is ultimately used to form a hole in an
insulator layer (20, Fig.1A) that has an emitter (34, Fig. 1A) furnished
therein. The emitter emits electrons. Appellants have not fairly explained
how the provision of such an emitter is not the provision of at least one
molecule in the pore opening. In this regard, claim 47 does not require that
each nanopore includes only one molecule. See In re Pangrossi, 277 F.2d
181, 184-85, 125 USPQ 410, 413 (CCPA 1960).
For the reasons set forth above and in the Answer, we affirm the
obviousness rejection of claims 1, 2, 5, 7, 8, 10-13, 23, and 47 over Kikuchi
and Deckman.
Rejection over Kikuchi, Deckman, and Hatakeyama
Appellants argue claims 3, 21, and 22 as a group (Br. 8-10). Thus, we
select claim 3 as the representative claim.
7
Appeal 2007-2983
Application 10/029,583

Dependent claim 3 further requires that the nanoparticles used as a
mask have an average particle size of around 1 to 10 nm.
In addition to the arguments made against the Examiner’s rejection of
independent claim 1, Appellants note that Hatakeyama is directed to the
formation of nanoscale cones not the formation of pores. Appellants
maintain that the Examiner is selecting bits and pieces from unrelated prior
art in asserting that the mask particle sizes of claim 3 would have been
obvious to employ in Kikuchi’s process.
The difficulty we have with Appellants’ argument is that Kikuchi, as
we explained above, provides the incentive for one of ordinary skill in the
art to employ smaller mask particles to form smaller pores and ultimately
smaller feature sizes. Here, Appellants have not fairly established why one
of ordinary skill of the art would not have found it obvious to employ
smaller spheres or particles on the order of 10 nm in size for masking in the
process of Kikuchi in light of Kikuchi’s desire for small feature sizes, given
that such particles are readily available for use as an etching mask as shown
by Hatakeyama (Hatakeyama; col. 2, ll. 41-49). In this regard, we note that
the Examiner is not relying on Hatakeyama for a teaching as to making a
particular feature or for reactive ion etching but rather for the capability of
micro fabricating with nanoscale masking particles and etching (see, e.g.,
Hatakeyama; col. 5, ll. 40-53). Rejected claim 3, for example, is not limited
to a process for making a particular device after a pore is formed as
evidenced by the open “comprising” transitional term used in claim 1, from
which claim 3 depends. As such, much of the argumentation furnished by
Appellants in the Brief appears to be misdirected. On this record, we affirm
the Examiner’s obviousness rejection of claims 3, 21, and 22.
8
Appeal 2007-2983
Application 10/029,583

Rejection over Kikuchi, Deckman, Hatakeyama, and Jun

Claims 9 and 14-20
Appellants argue these rejected claims as a group and make
substantially the same arguments made against the Examiner’s rejection of
claims 3, 21, and 22 above (Br. 11). Thus, we select claim 9 as the
representative claim. We note that rejected representative claim 9 depends
directly from claim 1 and requires insulation material being formed by
chemical vapor deposition (CVD) or liquid-phase techniques. Thus,
Appellants’ reliance on their arguments against the Examiner’s use of
Hatakeyama for teaching small nanosize particles as masks as set forth in the
previously discussed rejection fails to establish reversible error in the
Examiner’s rejection of representative claim 9 because claim 9 does not
require about 1-10 nm size particles (Br. 11). Moreover, Appellants do not
otherwise contest the Examiner’s reliance on Jun for teaching a CVD
insulation deposition feature in the rejection of representative claim 9. It
follows that, on this record, we shall affirm the Examiner’s obviousness
rejection of claims 9 and 14-20.

Claims 24-26, 28-46, and 48
Appellants argue claims 24-26 and 28-46, as a group (Br. 11-12). We
select claim 24 as the representative claim on which we shall decide this
appeal as to this claim grouping. We consider dependent claim 48
separately to the extent this claim has been separately argued (Br. 14).
Representative claim 24 is drawn to a method wherein at least one
nanopore is formed using at least one nanoparticle mask and directional
9
Appeal 2007-2983
Application 10/029,583

etching followed by placing at least one molecule in the at least one
nanopore.
As discussed above, Kikuchi discloses/suggests a method for forming
a small micro-pore using microspheres as masks and etching with steps
substantially corresponding to the claim 24 steps but for the required
nanoparticle size mask and nano-size pore. The Examiner takes the position
that the claim 24 requirement for dispersing at least one molecule in the pore
that is made is inclusive of dispersing more than one molecule in the pore.
In other words, the Examiner seemingly takes the position that the use of the
pores formed by Kikuchi for ultimately placing other materials therein for
making a device (such as the emitters thereof or some other material) would
have been obvious to one of ordinary skill in the art from the combined
teachings of the applied references, including Jun. Such a modified method
is within the scope of representative claim 24 because claim 24 is not limited
by the types or amounts of materials deposited in the pores that are formed.
Appellants’ arguments against the Examiner’s rejection of
representative claim 24 centers on their contention that the claimed
invention is directed to a molecular device rather than a semiconductor
device as the applied references are generally directed toward.
We do not find that contention and the myriad arguments that depend
on such a claim construction for rejected claim 24 persuasive (Br. 11-12 and
Reply Br. 2-4). This is so because representative claim 24 does not require
the preparation of a molecular electronic device.2 Rather, Claim 24 requires

2 Indeed, in the event of further prosecution of this subject matter before the
Examiner, the Examiner should review Appellants’ Specification to
determine whether or not the Specification, as filed, completely describes
10
Appeal 2007-2983
Application 10/029,583

the dispersal of at least one molecule in a pore that is formed by the method
steps recited therein without any constraints on how one or more molecules
are dispersed in or added to the pore. As we noted above with respect to
claim 47, Appellants have not fairly explained how the provision of an
emitter in Kikuchi is not the provision of at least one molecule in the pore
opening. In this regard, representative claim 24 does not require that each
nanopore only includes a single molecule. As such, Appellants have not
established reversible error in the Examiner’s rejection based on the
arguments set forth in the Brief and the unsubstantiated and irrelevant

and/or enables the complete preparation of a particular molecular electronic
device via the claimed method, much less a general method for preparing a
variety of such completed molecular electronic devices to the extent that the
claimed subject matter may be amended to require the formation of such a
device. In this regard, Appellants briefly discuss two widely differing prior
art techniques, and alleged shortcomings thereof in forming spaced holes in
a substrate for placement of molecules therein (Specification 1-2). Then,
Appellants describe their claimed method for forming nanopores for
deposition of materials therein, or for spacing or separating molecules
therein. In this regard and in the event of such further prosecution, the
Examiner should determine if Specification paragraphs 0031 and 0032
furnish enough detail as to how the pillars are selectively etched to form the
nanopores for compliance with § 112, first paragraph requirements. Also,
for example, the Examiner should determine if Specification, paragraphs
0033-0036, including the brief reference to unidentified emerging teachings
therein together with the remaining portions of the Specification satisfies the
§ 112, first paragraph requirements for an enabling disclosure in making a
workable molecular electronic device with molecules capable of switching
in the presence of an electronic field. We note that no Examples of the
preparation of a workable molecular electronic device, much less one made
according to the claimed method, are furnished in the Application
Specification, as filed.
11
Appeal 2007-2983
Application 10/029,583

contentions respecting differences between molecular electronic devices and
semiconductors as presented in the Reply Brief.

Claim 48
Concerning separately argued claim 48, the recited transitional term
“contains” leaves the pore open to the containment of other material besides
the recited one molecule for the same reasons we expressed above with
respect to separately rejected claim 47.
It follows that we shall sustain the Examiner’s obviousness rejection
of claims 9, 14-20, 24-26, 28-46, and 48 over Kikuchi in view of Deckman,
Hatakeyama, and Jun on this record.

Rejection over Kikuchi in view of Deckman, Hatakeyama, Jun, and Brandes
Rejected claim 4 depends from claim 1 and rejected claim 27 depends
from claim 24. Each of claims 4 and 27 requires that the at least one
nanoparticle used as a mask in the claimed method is “an inorganic
crystalline core covered with an organic layer” (claim 4 and claim 27).
Appellants acknowledge that these types of nanoparticles were
commercially available at the time of filing of this application (Specification
¶0021). In this regard, Kikuchi discloses that the particulate spherical masks
can be made from a variety of different materials (Kikuchi; col. 4, ll. 24-26).
Consequently, even if we could agree with Appellants that Brandes does not
teach or suggest their claimed organic coated inorganic crystalline core
particles, such arguments are not persuasive of reversible error in the
Examiner’s rejection in that Appellants have acknowledged the commercial
availability of organic coated - inorganic crystalline core particles and one of
12
Appeal 2007-2983
Application 10/029,583

ordinary skill in the art would have readily recognized the utility thereof in
the method of Kikuchi given that Kikuchi is concerned with making fine
feature sizes. Thus, the use of such small masking particles as Appellants
acknowledge to be commercially available would have been recognized by
one of ordinary skill in the art as being useful as particle masks in Kikuchi’s
process. It is axiomatic that admitted prior art in an applicants' Specification
may be used in determining the patentability of a claimed invention and that
consideration of the prior art cited by the Examiner may include
consideration of the admitted prior art found in an applicants' Specification.
In re Nomiya, 509 F.2d 566, 570-571, 184 USPQ 607, 611-612 (CCPA
1975).
Thus, we shall affirm the Examiner’s obviousness rejection of claims
4 and 27 on this record.

CONCLUSION
The decision of the Examiner to reject claims 1, 2, 5, 7, 8, 10-13, 23,
and 47 under 35 U.S.C. § 103(a) as being unpatentable over Kikuchi in view
of Deckman; to reject claims 3, 21, and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Kikuchi in view of Deckman and Hatakeyama; to
reject claims 9, 14-20, 24-26, 28-46, and 48 under 35 U.S.C. § 103(a) as
being unpatentable over Kikuchi in view of Deckman, Hatakeyama, and Jun;
and to reject claims 4 and 27 under 35 U.S.C. § 103(a) as being unpatentable
over Kikuchi in view of Deckman, Hatakeyama, Jun, and Brandes is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
13
Appeal 2007-2983
Application 10/029,583

AFFIRMED

sld

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
P.O. BOX 272400
FORT COLLINS, CO 80527-2400

14